Robyn Ann Roelofs v Endurequip Pty Ltd
[1993] APO 64
•18 October 1993
official notice
decision of a delegate of the commissioner of patents
Petty patent : No. 622391 in the name of ROBYN ANN
ROELOFS
Title : Column Hoists
Action: Application under s.69 for an extension of term of the petty patent; notice by ENDUREQUIP PTY LTD under s.28.
Decision: Issued . Petty patent invalid. Lack of fair basis. Novelty. Patentee given the opportunity to amend.
patents act 1990
decision of a delegate of the commissioner of patents
Re:Petty Patent No. 622391 in the name of ROBYN ANN ROELOFS, application under section 69 of the Patents Act 1990 for an extension of term of the petty patent, and notice by ENDUREQUIP PTY LTD under section 28 regarding the petty patent.
background
Petty patent 622391 in the name of ROBYN ANN ROELOFS was granted on application 79285/91 on 25 February 1992. Application 79285/91 was filed on 21 June 1991 as a divisional application from standard patent application 613685 (formerly 26678/88) pursuant to section 39 of the Patents Act 1990. Application 613685 was filed on 8 December 1988 and claims priority from provisional application PI 5795 which was lodged on 8 December 1987. Application 613685 was advertised accepted on 8 August 1991 and sealed on 10 February 1992.
ENDUREQUIP PTY LTD (the informant) notified the Commissioner of Patents (the Commissioner) of matters pursuant to section 28 of the Patents Act 1990 on 15 January 1993. ROBYN ANN ROELOFS, the patentee, applied for an extension of the term of the petty patent on 19 January 1993.
The reasons required by section 28(1) were filed with the section 28 notice together with a statutory declaration by JOHN WILLIAM PURCELL and accompanying exhibits. The patentee did not file Evidence-in-response.
A hearing was set down in Brisbane on 7 September 1993.
Peter C. Fisher, patent attorney of FISHER & KELLY, represented ENDUREQUIP PTY LTD at the hearing. The patentee was not represented at the hearing and did not file written submissions.
section 28 notice
By notice under section 28 a person (the informant) can assert that a petty patent is invalid on various grounds. The provisions of the Act are such that if the Commissioner is satisfied that a ground mentioned in subsection 28(1) of the Act is made out, the Commissioner may refuse to grant an extension of the term of the petty patent. If not so satisfied, the Commissioner must grant an extension of the term (see section 69 and regulation 6.6).
The informant's notice asserts the petty patent is invalid on the following grounds:
a)That the invention is not a patentable invention because it does not comply with paragraph 18(1)(b) and,
b)That the specification does not comply with sub-section 40(3).
SPECIFICATION
The specification commences by indicating that the invention relates to improvements in column hoists suitable for lifting loads. There follows a discussion of two generally known alternative constructions of column hoists and their associated disadvantages. In particular, hoses and seals used in the prior art hydraulic hoists are liable to failure and expensive to manufacture and maintain. Prior art screw-type hoists use travelling nuts which travel along rotating screws and have low efficiency due to large friction losses between the screws and the travelling nuts. The screws are also liable to wear and must be maintained and lubricated to prevent early failure.
The specification then states:
"It is an object of the present invention to provide a drive for a column hoist which is relatively inexpensive and simple to manufacture and maintain. It is a preferred object to provide a drive which uses chains to raise or lower the load platform."
These objects of the invention and the consistory statement corresponding to claim 1 indicate that the invention provides a drive for a column hoist. The drive include a drive means provided with a chain engaging pulley or sheave in driving engagement with a chain means. The chain means passes around a further pulley or sheave provided on a load platform and is driven to raise or lower the platform along the column of the hoist.
The specification ends with three claims as follows:
1.A drive for a column hoist for vehicles or other loads including:
a drive means, mounted at or adjacent the upper end of a column of a column hoist, provided with a chain engaging pulley or sheave, the chain engaging pulley or sheave having formations to provide driving engagement with a chain means;
a further pulley or sheave means provided on a load platform on the column, the load platform being guided for vertical movement on the column; and
a chain means in driving engagement with the chain engaging pulley or sheave and passing around the further pulley or sheave and arranged, when driven by the drive means, to raise and lower the load platform on the column.
2.A drive according to Claim 1 wherein:
the chain means is anchored at one end to the upper end of the column and successive runs of the chain means pass around the further pulley or sheave means on the load platform and pulley and sheave means rotatably mounted at or adjacent the upper end of the column.
3.A drive according to Claim 1 or Claim 2 wherein:
the drive means includes an electric motor and a reduction gearbox at the upper end of the column; and
the chain engaging pulley or sheave is fixed on a shaft connected to the output of the reduction gearbox.
submissions
At the hearing Mr Fisher for the informant spoke to the main issues contained in the section 28 notice.
The informant's notice includes a number of grounds upon which invalidity is asserted. These grounds are summarised as follows:
(a)Claims 1 to 3 are not fairly based on matter described in provisional application PI5795. These claims include the feature "a further pulley or sheave means provided on a load platform on the column ...." which is not disclosed in the provisional specification of application PI5795. The priority date of claims 1 to 3 is, at best, 8 December 1988, the filing date of the complete specification of application 26678/88 which claims priority from provisional application PI5795.
(b)Claim 2 in ambiguous in that its reference to "and pulley or sheave means rotatably mounted at or adjacent the upper end of the column" could refer to "the chain engaging pulley or sheave having formations to provide driving engagement with a chain means" previously recited in claim 1 or alternatively to a pulley or sheave means in addition thereto. This reference in claim 2 could embrace idler pulleys or sheaves mounted on a shaft separate from the output shaft 32 of gearbox 32A. This construction exceeds the disclosure in provisional specification PI5795 and complete specification 26678/88, and is entitled to a priority date of 21 June 1991 which is the filing date of the petty patent application.
(c)The informant submits that at the filing date of patent application 26678/88 the invention as claimed in each of claims 1 to 3 was not novel nor did it possess an inventive step when compared with the prior art at that time. The prior art base consisted of non-secret use by Blue Ribbon Coaches Pty Ltd of a vehicle column hoist before the earliest priority date of the petty patent claims.
The evidence
The evidence in support of the section 28 notice consists of a statutory declaration by John William Purcell accompanied by three exhibits. As indicated above, no evidence-in-response was lodged.
The more significant points from Mr Purcell's declaration are:
(a) that he is a manager of Blue Ribbon Coaches Pty Ltd,
(b)that on or about February 12, 1988 he supervised the delivery from Mr Don Grkovic of vehicle hoist assemblies to his company's Hunter Valley depot at High Street, Maitland, New South Wales,
(c)that annexed Exhibit A is copy of his company's cheque stub no. 483924 dated February 12, 1988 which represents a final payment to Mr Grkovic for the hoists,
(d)that the column hoists were installed at his company's premises on the same day that delivery took place and were used to elevate buses,
(e)that the column hoists were clearly visible to tradespersons, equipment suppliers, engineering staff and many visitors to the premises, and from time to time the hoists were used on the concrete apron adjacent the work shop in clear view of the public,
(f)that "At no stage was the use of the hoists made in a confidential manner",
(g)that annexed Exhibit C are photographs showing the column hoists delivered to the Hunter Valley depot in Maitland on or about February 12, 1988 by Mr Grkovic.
I will discuss the relevant parts of the supporting evidence in further detail where appropriate in my decision.
decision
Section 40
The informant asserts that claim 2 of the petty patent 622391 is not clear and succinct as the reference to "and pulley or sheave means rotatably mounted at or adjacent the upper end of the column" could refer to "the chain engaging pulley or sheave having formations in driving engagement with a chain means" previously recited in claim 1 or alternatively to a pulley or sheave means in addition thereto.
I do not agree that the reference in claim 2 could refer to "the chain engaging pulley or sheave having formations in driving engagement with a chain means" previously recited in claim 1. The pulley or sheave referred to in claim 1 is qualified by "chain engaging". The pulley or sheave means in claim 2 is not so qualified. A person skilled in the art would have no difficulty in construing that the references in claims 1 and 2 are separate and distinct. I think the reference in claim 2 is intended to define a pulley or sheave means in addition to the chain engaging pulley or sheave previously recited in claim 1. Comparing to the example described with reference to figures 1 to 9 in the petty patent specification, the chain engaging pulley or sheave of claim 1 would be equivalent to the chain pulley or sheave 34, and the pulley or sheave means defined in claim 2 would be equivalent to one of the plurality of pulleys or sheaves 33. I note that at page 3 lines 10 to 15 the drive means is described as connected to one of the sheaves. I think this infers that the other sheaves could be connected to other things of the column hoist. In my view claim 2 is unambiguous.
Priority Date
Claims 1 to 3 include the feature "a further pulley or sheave means provided on a load platform on the column". The informant asserts that the provisional application PI5795 is wholly silent as to the possibility of this feature and that the invention as claimed in claims 1 to 3 is therefore not fairly based on the matter disclosed in provisional application PI5795.
Blanco White, 5th Edition at page 34 in explaining the application of the "Mond Nickel rules" (from Mond Nickel's Application [1956] RPC 198) in I.C.I.'s Patent [1960] RPC 223, states:
"... the following three fold enquiry should be made: (1) Is the invention claimed described in a general sense in the provisional? (2) Is there anything in the provisional which is inconsistent with the invention as claimed? and (3) In so far as the issue arises from the presence of specific detail in the claim, does the claim include as a characteristic of the invention a feature not mentioned in the provisional?
In my opinion, the claims in petty patent application 622391 satisfy parts 1 and 2 of the Mond Nickel rules in that provisional application PI5795 broadly discloses a drive means in combination with pulley or sheave means and cable or chain means to raise or lower a load platform on a column hoist and it does not include anything inconsistent with the invention as claimed. But I find that the claims do not satisfy part 3 of the Mond Nickel rules as provisional application PI5795 is totally silent as to the feature "a further pulley or sheave means provided on a load platform on the column". According to PI5795 the load platform is connected to the cable or chain means (page 2 lines 30 to 33) with, in one example, one end of the chain means being connected to the platform (page 4 line 34 to page 5 line 10). In another example the platform is attached to a downward run of the chain between two sheaves (page 5 lines 23 to 25). I am of the opinion that the provisional application does not hint nor infer the possibility of a pulley or sheave means provided on the platform. The feature in question is first disclosed in the complete specification of 26678/88 and accordingly the earliest priority date of claims 1 to 3 is the filing date of that specification, i.e. 8 December 1988.
Novelty
The informant asserts that the invention claimed is prior published by the non-secret use of the column hoist assemblies installed at the Hunter Valley depot of Blue Ribbon Coaches Pty Ltd on or about 12 February 1988.
As indicated above, the evidence in support is provided in John William Purcell's statutory declaration. Annexed to the declaration are Exhibit A which is a copy of the cheque stub said to represent final payment to Mr Grkovic, the supplier of the hoist assemblies, Exhibit B which is a copy of the specification of petty patent 622391 and Exhibit C which is a set of photographs said to show the column hoists delivered to the Hunter Valley depot on or about 12 February 1988.
Mr Purcell states that he is a manager employed by Blue Ribbon Coaches Pty Ltd. On or about 12 February 1988 he supervised delivery from Mr Don Grkovic of the vehicle hoist assemblies to his company's Hunter Valley depot. The column hoists were installed at his company's premises on the same day delivery took place and were used to elevate buses. The column hoists were visible to people at the premises and passers-by through open doors of the workshop in which the hoists were installed. From time to time the column hoists were used adjacent the workshop in clear view of the public. At no stage was the use of the hoists made in a confidential manner. He also lists the structural features of the hoists. In his opinion, each of the features recited in claims 1, 2 and 3 of petty patent 622391 were present in the column hoists delivered to his company on or about 12 February 1988.
In relation to this last point, the evidence in support does not indicate Mr Purcell's technical qualifications. It also does not indicate what his normal duties are apart from negotiating to purchase the column hoists and supervising delivery of the hoists. A person who negotiates to purchase column hoists and supervises deliveries of them does not necessarily possess technical competency in column hoists. However, the language and technical terms he used in the statutory declaration lead me to believe that he has sufficient technical knowledge of the working of column hoists.
Looking now at the supporting exhibits, Mr Purcell states that the cheque stub (Exhibit A) represents a final payment to Mr Grkovic. Exhibit A indicates that a payment of $18,000 was made for "4th Payment 2 Sets Hoists" to "Global Lifts" on 12 February 1988. I note that there is nothing in the evidence to link Mr Grkovic and Global Lifts however this exhibit tends to support Mr Purcell's statement of events. The photographs annexed as Exhibit C allegedly show the hoists delivered to Blue Ribbon Coaches on or about 12 February 1988. They clearly depict column hoists having all the features referred to by Mr Purcell in paragraph 5 of his declaration, and indeed all the features defined in claims 1 to 3.
It follows from the above that if I accept Mr Purcell's evidence as fact then I should find the patent invalid on the grounds of lack of novelty. In considering the question of proof of prior use, I note that in Seiller's Application [1970] RPC 103, Graham, J said at 106:
"In my judgment it is necessary that proof of prior user in opposition cases should be very clear. Normally, in the absence of cross-examination, this will involve corroboration of a mere statement as to recollection in a declaration, particularly where the time interval involved is considerable. Such corroboration is often best found in documents contemporary with the fact to be proved. Each case, however, must be considered on its own facts and I say expressly that I am not attempting to lay down any rule as to what is or is not sufficient in any given case."
In the present case, I have only Mr Purcell's declaration to assert non-secret use of the claimed invention before the priority date although the exhibits A and C provide some documentary corroboration. A similar situation arose in Glenwood Systems v Gooden (1993) AIPC 90-985, and in that case the Hearing Officer decided that the uncorroborated evidence of a single declarant was sufficient proof on the basis that:
the evidence was prima facie credible;
there was no contradictory evidence; and
the declarant was an independent witness.
In relation to this the Hearing Officer noted that Seiller's Application and similar cases, eg. Laguerre's Patent [1970] RPC 587, Dunlop Holdings Ltd's Application [1979] RPC 523 and Jarvis v Doman (1984) 3 IPR 300, did not deal fully with the degree of corroboration of an independent witness or declarant. Furthermore, on the second point, that in Dunlop Holdings, supra, Waller, L.J. stated that: "the opponent's evidence, being unchallenged and uncontroverted, must be accepted at face value.".
Here I find that Mr Purcell's evidence is prima facie credible. His declaration, except possibly the minor matter of the name on the cheque stub, is unambiguous and plausible. The evidence has also not been challenged by the Patentee who has not filed any evidence-in-response or otherwise addressed the section 28 notice despite opportunities to do so. Finally, there is nothing to indicate that Mr Purcell is not an independent witness. From the section 28 notice it is apparent that the informant is a manufacturer of hoist equipment based in Brisbane. The declarant on the other hand is employed as a manager by Blue Ribbon Coaches and is resident in Nelsons Plains, NSW.
In the circumstances I am of the view that Mr Purcell's declaration is of sufficient value to prove that column hoists including all the features of claims 1 to 3 were published by virtue of non-secret use before the priority date of the claims and I am therefore satisfied that the Petty Patent is invalid for lack of novelty.
conclusion
I find that the invention as claimed in claims 1 to 3 is not fairly based on the provisional application, PI5795. The priority date of the claims is therefore 8 December 1988, the date of lodgement of the complete specification of 26678/88. Furthermore, I am satisfied that claims 1 to 3 are not novel because of prior use before the priority date and that the Petty Patent is therefore invalid. However, I am of the opinion that there may be patentable subject matter disclosed in the specification and I allow the patentee 60 days from the date of this decision to propose amendments to overcome the defects to my satisfaction. If the patentee does not seek leave to amend the specification I will formally refuse to grant extension of the term of the petty patent.
costs
Section 210 gives the Commissioner power to award costs against a party to proceedings before the Commissioner. Action under section 69 which involves a person who gives a notice to the Commissioner under section 28 is, in my view, one such proceeding before the Commissioner.
Costs normally follow the event. As I have found that the informant has been successful, I award costs against Robyn Ann Roelofs.
PHILIP SPANN
Delegate of the Commissioner of Patents
Patent attorneys for the applicant : Grant Adams & Company, Brisbane
Patent attorneys for the informant : Fisher & Kelly, Brisbane